Ex parte Bugnon et al.

Board of Patent Appeals and Interferences

Jul 27, 2000

08359710 (B.P.A.I. Jul. 27, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2)
is not binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHILIPPE BUGNON and FRITZ HERREN
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Appeal No. 1997-0687
Application No. 08/359,710
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ON BRIEF
____________
Before PAK, WALTZ, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s refusal to allow claims 12, 19, 22, 24, 26, and 27 which
are all the claims remaining in the application. THE INVENTION
The invention is directed to a process for warp free pigmenting of polyolefins by adding to the polyolefins
diketo-pyrrolopyrrole pigment particles coated with from 1 to 5% by weight of a polyvinyl pyrrolidone polymer. In a
separate embodiment the coated pigment may be prepared by coating the diketo-pyrrolopyrrole pigment particles
with 1 to 10% by weight of a vinyl pyrrolidone-vinyl acetate copolymer. In each embodiment the coated pigment
particles are thereafter admixed with a polyolefin.
THE CLAIMS
Claims 24 and 27 are illustrative of appellants’ invention and are reproduced below.
24. A process for warp-free pigmenting of polyolefins, which comprises:
Appeal No. 1997-0687
Application No. 08/359,710
This rejection of claim 27 appears for the first time in the Answer. See page 5. No such rejection appears in either the Office action dated April 12, 1995, paragraph 20, or in the Final Office action dated August 29, 1995. However, appellant has responded to the Answer by submission of a Reply Brief wherein
1
no objection was raised to the examiner’s statement of the rejection. Moreover, we are able to dispose of the rejection based upon one of the indispensable secondary references required in all but one of the rejections before us for consideration. Accordingly, we retain the rejection for consideration on its merits.
2
(a) coating organic pigment particles, which are diketopyrrolopyrroles, with one or more films of a preformed polymer
by adsorption of from 1 to 5% by weight of the polymer, based on the pigment, onto the surface of the pigment
particles at room temperature, the polymer being selected from the group consisting of polyvinylpyrrolidone
homopolymers and copolymers; and
(b) admixing the coated pigment particles with a polyolefin.
27. A process for the warp-free pigmenting of polyolefins, which comprises:
(a) coating organic pigment particles, which are diketopyrrolopyrroles, with one or more films of a preformed polymer
by adsorption of 1 to 10% by weight of the polymer, based on the pigment, onto the surface of the pigment particles
at room temperature, the polymer being a polyvinylpyrrolidone-vinyl acetate copolymer; and
(b) admixing the coated pigment particles with a polyolefin.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references.
Hopfenberg et al. 3,904,562 Sep. 9, 1975
(Hopfenberg)
Loch 4,388,435 Jun. 14, 1983
Martin 4,771,086 Sep. 13, 1988
Bugnon et al. 4,808,230 Feb. 28, 1989
(Bugnon)
Kamada et al. 4,957,949 Sep. 18, 1990
(Kamada)
THE REJECTIONS
Claims 12, 19, 22, 24 and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hopfenberg in view
of Kamada.
Claims 12, 19, 22, 24 and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hopfenberg as
modified by Kamada as applied to claims 12, 19, 22, 24 and 26 above and further in view of Bugnon.
Claim 27 stands rejected under 35 U.S.C. § 103 as being unpatentable over Martin as modified by Hopfenberg in
view of Bugnon and further in view of Loch.1
Appeal No. 1997-0687
Application No. 08/359,710
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Claim 27 stands rejected under 35 U.S.C. § 103 as being unpatentable over each of Hopfenberg in view of Kamada
or Hopfenberg as modified by Kamada in view of Bugnon, each as applied to claims 12, 19, 22, 24 and 26 and further
in view of Loch.
OPINION
We have carefully considered all of the arguments advanced by appellants and the examiner and agree with
the appellant that the aforementioned rejections under 35 U.S.C. § 103 are not well founded. Accordingly, we will not
sustain any of the rejections.
The Rejections under Section 103 -- Obviousness
“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima
facie case of unpatentability, ” whether on the grounds of anticipation or obviousness. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In the case before us, the examiner relies upon five references in
multiple combinations, in five separate rejections to reject the claimed subject matter and establish a prima facie
case of obviousness.
All but one of the rejections rely on a reference to Bugnon, which is the sole reference directed to the claimed
diketopyrrolopyrroles. As to the rejection of Hopfenberg in view of Kamada, the examiner has stated that neither
Hopfenberg nor Kamada discloses the various diketo-pyrrolopyrrole pigments. See Answer, page 4. That omission
in and of itself constitutes reversible error. The mere possibility that the processes of Hopfenberg could be modified
such that the diketo-pyrrolopyrrole pigments recited in the claimed subject matter were substituted for the pigments
of Hopfenberg does not make the claimed processes obvious, absent a suggestion in the prior art of the desirability
of such a modification. The absence of that suggestion or motivation in and of itself is sufficient to conclude that no
prima facie case of obviousness had been established. See In re Ochai,71 F.3d 1565, 1569-1570, 37 USPQ2d 1127,
1131-1132 (Fed. Cir. 1995).
Appeal No. 1997-0687
Application No. 08/359,710
4
The basic premise of each of the balance of the rejections is that Bugnon discloses numerous organic pigments
including diketo-pyrrolopyrrole pigments as functionally equivalent pigments. It is the examiner’s position that it
would have been obvious to one of ordinary skill in the art to substitute the diketo-pyrrolopyrrole pigments of
Bugnon for the pigments taught by Hopfenberg, Answer, pages 4 and 5, and Martin, as Martin does not disclose the
claimed specific diketo-pyrrolopyrrole pigments. See Answer, page 6. We disagree.
Bugnon discloses coating organic pigments with fixed metal oxides additionally having a dense highly
crosslinked coating of silica and/or alumina fixed by polycondensation of a silicate and/or aluminate with the free
hydroxy groups of ethyl cellulose. See Bugnon, column 1, lines 43-50. Although the examiner suggests substituting
the pigments for each other, the pigments of Bugnon do not exist as separate entities as discussed supra, but as
coated fixed oxide entities. Moreover, no explanation is offered by the examiner as to why the person having
ordinary skill in the art would have taken the fixed oxide layer taught by Bugnon, removed the highly crosslinked
coating of silica and/or alumina, removed the oxide layer and substituted the polyvinyl pyrrolidone layer of
Hopfenberg. In the absence of such an explanation, no prima facie case of obviousness can be established.
Furthermore, the second declaration of Bugnon, directed to a comparison of two different amounts of diketo-
pyrrolopyrrole pigments coated respectively with 4.996% and 28% polyvinyl pyrrolidone, provides additional
evidence of the unexpected superiority of appellants’ claimed subject matter over the closest prior art.
Based upon the above analysis, we have determined that the examiner’s legal conclusion of obviousness is not
supported by the facts. “Where the legal conclusion [of obviousness] is not supported by the facts it cannot
stand.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
DECISION
The rejection of claims 12, 19, 22, 24 and 26 under 35 U.S.C. § 103 as being unpatentable over Hopfenberg in view
of Kamada is reversed.
The rejection of claims 12, 19, 22, 24 and 26 under 35 U.S.C. § 103 as being unpatentable over Hopfenberg as
modified by Kamada as applied to claims 12, 19, 22, 24 and 26 above and further in view of Bugnon is reversed.
Appeal No. 1997-0687
Application No. 08/359,710
5
The rejection of claim 27 under 35 U.S.C. § 103 as being unpatentable over Martin as modified by Hopfenberg in
view of Bugnon and further in view of Loch is reversed.
The rejection of claim 27 under 35 U.S.C. § 103 as being unpatentable over each of Hopfenberg in view of Kamada
or Hopfenberg as modified by Kamada in view of Bugnon, each as applied to claims 12, 19, 22, 24 and 26 and further
in view of Loch is reversed
The decision of the examiner is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
lp
Appeal No. 1997-0687
Application No. 08/359,710
6
MICHAEL W GLYNN
CIBA-GEIGY CORPORATION
PATENT DEPARTMENT
520 WHITE PLAINS RD
PO BOX 2005
TARRYTOWN NY 10591-9005
Leticia
Appeal No. 1997-0687
Application No. 08/359,710
APJ LIEBERMAN
APJ WALTZ
APJ PAK
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: March 2, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT